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The Court of Justice of the European Union ("ECJ")
overruled the General Court and OHIM in its judgment of 24 May 2012
by acknowledging the in se distinctiveness of the
'F1' sign because of the existence of an earlier national
trade mark.
Formula One Licensing BV ("Formula One") appealed to
the ECJ against the judgment of the General Court which had
dismissed its trade mark claim against OHIM. Formula One challenged
OHIM's decision to dismiss Formula One's opposition to an
application for registration of a Community trade mark relating to
the F1 sign. This application had been made in April 2004 by
Racing-Live SAS ("Racing-Live"), which runs a car-racing
website in France.
Formula One based its opposition on the existence of an
international word mark, two national word marks for 'F1'
(in the UK and Germany) and the following figurative Community
Trade Mark ("CTM"):
The opposition was dismissed by the Board of Appeal of OHIM in
2008 for absence of likely confusion between the two signs. OHIM
also held that the word 'F1' was a descriptive element in
the trade mark. The General Court sided with OHIM, finding that
Formula One's earlier 'F1' word marks were generic,
descriptive and deprived of an intrinsic distinctive character.
Upon appeal, the ECJ reversed the General Court's judgment.
The ECJ first emphasised that the registration of national trade
marks, which coexist with the CTM system, is solely a matter for
the Member States. As a result, neither OHIM nor the General Court
can call into question the registration or validity of a national
trade mark in opposition proceedings against the registration of a
CTM. Instead, the validity of national trade marks can only be
questioned in national validity proceedings in the Member State of
registration of the trade mark.
Moreover, the ECJ pointed out that, at the risk of eliminating
the protection associated with national trade marks, it cannot be
held in CTM opposition proceedings that a national trade mark is
devoid of distinctive character. According to the ECJ, the EU court
must acknowledge at least a degree of distinctiveness in an earlier
registered national trade mark used as the basis for opposition
against CTM application.
The ECJ held that the General Court had erred in law by finding
that Formula One's "F1" national mark had no
distinctive character. Indeed, the General Court could not question
the validity of the national mark, which predates Racing-Live's
proposed trade mark. Therefore, the ECJ reversed the judgment under
appeal and referred the case back to the General Court for a
judgment on the merits, i.e. whether Racing-Live's CTM
application should be refused on the basis of the earlier
'F1' trade marks.
This case confirms the importance of national trade marks in
oppositions against later CTM applications. In addition, it limits
the competence of the European courts with regard to the validity
of national trade marks.
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